By Yuri Mikulka, Thomas F. Zuber, and Benjamin C. Deming of Zuber & Taillieu LLP
In a long-awaited opinion, the U.S. Supreme Court affirmed the Federal Circuit Court’s ultimate holding in In Re Bilski, but held that the Federal Circuit’s machine-or-transformation test is not the sole test for patentability of a claimed process. Bilski v. Kappos, ___ U.S. ___, 2010 WL 2555192, No. 08-964 (June… More...
The Federal Circuit has held that the founder and president of a company that has submitted a patent application may owe a duty to disclose to the USPTO under Rule 56(c)(3), even if he was not the inventor or preparing attorney or agent. In Avid Identification Systems Inc. v. The Crystal Import More...
The Federal Circuit clarified that extraneous and “inapposite” past license evidence should not be used to calculate reasonable royalty rates in patent infringement cases. In ResQNet.com Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010), the Federal Circuit court affirmed a district court More...
In a controversial decision, the U.S. District Court for the Southern District of New York has held that neither isolated DNA nor methods directed toward identifying mutations in these genes constitute patentable subject matter under 35 U.S.C. section 101. If upheld on appeal, Ass’n for Molecular More...
The U.S. Court of Appeals for the Federal Circuit affirmed a $200 million-plus patent infringement damages award, as well as an accompanying injunction, against Microsoft. In i4i Ltd. P’ship v. Microsoft Corp., the Circuit Court stated that its review of a couple of key issues was limited due to More...
In a recent and rare precedential decision, the Board of Patent Appeals and Interferences (BPAI) has clarified that examiner findings are given no deference when specifically challenged on appeal. However, the Board will neither review nor disturb examiner findings that are not specifically More...
The Federal Circuit Court has broadened the standard for inducement of patent infringement by holding that proof of a defendants’ deliberate disregard of the risk that a patent exists can meet the actual knowledge requirement of an inducement claim. In SEB S.A. v. Montgomery Ward & Co., Inc., 594 More...
The U.S. Court of Appeals for the Federal Circuit has extended the holding of Egyptian Goddess v. Swisa, 435 F.3d 665 (Fed. Cir. 2008), and held that the “point of novelty” test should no longer be applied to determine validity of a design patent. In Int’l Seaway Trading Corp. v. Walgreens More...
The Federal Circuit has determined that the maximum fine for violation of the federal false marking statute should be applied on a per article basis, rather than the “per decision” basis applied by a majority of district courts in the past. In The Forest Group, Inc. v. Bon Tool Co., 590 F.3d More...
The Federal Circuit has preserved patent-eligibility for medical diagnostics testing, finding that the administration of drugs and determination of resulting chemical levels can meet the machine-or-transformation test set forth in In re Bilski. In Prometheus Labs, Inc. v. Mayo Collaborative Servs., More...
The Federal Circuit has established a heightened pleading requirement for claims of inequitable conduct, requiring more than “a mere showing that art or information having some degree of materiality was not disclosed.” In Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 1331 (Fed. Cir. More...
